Ex Parte Elliott et al

Patent Trial and Appeal Board

Jul 31, 2017

13828406 (P.T.A.B. Jul. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/828,406 03/14/2013 DORON M. ELLIOTT 83355983 2563
28395 7590 08/02/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER BRYAN, JASON B
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
2114
NOTIFICATION DATE DELIVERY MODE
08/02/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DORON M. ELLIOTT and JAMES DRAGESCU
Appeal 2017-004951
Application 13/828,4061
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20, which constitute all of the claims pending
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Ford Global
Technologies, LLC. App. Br. 2.
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Application 13/828,406
INVENTION
Appellants’ application relates to “a method and apparatus for
tracking device interaction information.” Spec. 1. Claim 1 is representative
of the appealed subject matter and reads as follows:
1. A system comprising:
a vehicle-based processor configured to:
attempt to establish with a wireless connection to a
mobile phone;
store instances of connection failure, between the
processor and the mobile device, and related error data;
perform interaction with a connected device;
store data-exchange failure-related error data; and
report connection failure data, connection failure-
related error data and data-exchange failure-related data to
a remote network upon establishing a connection between
the processor and a remote server.
REJECTION
Claims 1—20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Laguer-Diaz et al. (U.S. 6,434,458 Bl;
issued Aug. 13, 2002) (“Laguer”), Zeinstra et al. (U.S. 2006/0168627 Al;
published July 27, 2006) (“Zeinstra”), Schwinke et al. (U.S. 2004/0203728
Al; published Oct. 14, 2004) (“Schwinke”), and Otsuka et al. (U.S.
2011/0281573 Al; published Nov. 17, 2011) (“Otsuka”).
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
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Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
Claims 1, 4—8, 11—15, and 18—20
Appellants contend the Examiner erred because the combination of
Laguer-Diaz, Zeinstra, Schwinke, and Otsuka does not teach or suggest the
limitation “store instances of connection failure,” as recited in claim 1. App.
Br. 7. Appellants argue that Otsuka’s teaching of “indicating/notifying of a
connection error/timeout occurring between an in-vehicle terminal and a
mobile device and storing logs from before or after the error” does not teach
or suggest the disputed limitation. Id. Appellants further argue that
temporarily placing something in rewritable memory is not a reasonable
interpretation of “storing.” Id.
Appellants’ arguments do not persuade us of Examiner error.
Regarding the interpretation of the claim term “storing,” the Examiner
concluded that claim 1 does not require any particular type of storing, any
particular duration of storing, or any particular location or format for storing.
Ans. 2. Thus, the Examiner interpreted the term “store” broadly to
encompass “any kind of storing,” which in turn encompasses the cited
notification of an error or timeout in Otsuka. Id. (citing Otsuka Figs. 4, 8—
10,H66, 71, 77, 81, 84, 87). The Examiner noted that his findings related
to Otsuka are consistent with Appellants’ acknowledgement that a computer
would at least temporarily hold data as it is acted upon. Id.', see also App.
Br. 7-8.
Our reviewing court guides that claim terms are to be given their
broadest reasonable interpretation, as understood by those of ordinary skill
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in the art and taking into account whatever enlightenment may be had from
the Specification. In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997).
Appellants point to no definition of “store” in the Specification, and we find
none. We conclude the Examiner’s claim interpretation that “store” is broad
enough to encompass temporarily storing is reasonable, because claim 1 and
the Specification are silent regarding any temporal limitation in storing data.
Ans. 2—3.
In the Reply Brief, Appellants argue that “artisans skilled in the
computer arts understand the distinction between ‘holding’ data and
‘storing’ data,” and that “[sjtoring implies some level of permanence.”
Reply Br. 2. Appellants, however, present insufficient persuasive
explanation or objective evidence of record that the Examiner's
interpretation of claim 1 is overbroad, unreasonable, or inconsistent with the
Specification. Indeed, Appellants’ position is unsupported by any evidence
or declaration of record.
Appellants next argue the Examiner erred because logs of processes
from before and after an error, as taught in Otsuka, are not “instances of
connection failure,” as claim 1 requires. App. Br. 8 (citing Otsuka 1 84).
Appellants’ argument is not persuasive. In the Answer, the Examiner
explained that Otsuka’s step of indicating/notifying of a connection error or
timeout teaches the “instances of connection failure,” and the logs of Otsuka
teach the claimed “related error data” recited in claim 1. Ans. 3 (citing
Otsuka Figs. 4, 8—10, H 71, 77, 81, 84, and 87). Appellants do not address
or persuasively rebut the Examiner’s findings in the Reply Brief.
Moreover, our reviewing court has held that nonfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
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been anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.’”) (citations omitted).
Appellants argue that storing “instances of connection failure . . . and
related error data,” as claimed, patentably distinguishes over the prior art.
App. Br. at 7—8. We disagree because, here, the descriptive material at
issue—instances of connection failure and related error data—is not
functionally related to either the claimed “vehicle-based processor” or the
claimed “remote network.” The particular content of the provided data is
not positively recited as changing or affecting any machine or computer
function, nor the manner in which the other claim steps or acts are
performed. Thus, we conclude the “store” limitation is performed in the
same manner regardless of the particular data to be stored. Moreover, even
if the recited data were functional, the claimed portion of the vehicle-based
processor differs from the prior art only in the content of the data stored,
which is not a patentable distinction. As a result, Appellants’ claimed
instances of connection failure and related error data do not distinguish the
claimed invention from the prior art.
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Laguer, Zeinstra, Schwinke, and Otsuka teaches or
suggests the disputed limitations of representative claim 1.
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Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
representative independent claim 1, as well as the 35 U.S.C. § 103(a)
rejection of independent claims 8 and 15, which Appellants argue are
patentable for similar reasons. App. Br. 8. We also sustain the Examiner's
rejection of dependent claims 4—7, 11—14, 18—20, for which Appellants
make no separate arguments for patentability. Id. See 37 C.F.R.
§41.37(c)(l)(iv).
Claims 2, 9, and 16
Claim 2 depends from claim 1 and recites the further limitation
“wherein the processor is further configured to create a device profile for the
mobile phone, including mobile phone configuration data, and to store
failures and errors related to the mobile phone with respect to the profile.”
App. Br., Claims App’x 1.
Appellants contend the Examiner erred because the cited prior art fails
to teach the limitation “to store failures and errors related to the mobile
phone with respect to the profile.” App. Br. 8—9. Appellants argue that
“[rjeporting an error with respect to a phone model or make and storing error
data with respect to a phone profile are not the same thing.” App. Br. 9.
Appellants’ arguments do not persuade us of Examiner error. The
Examiner found that Zeinstra teaches a phone profile. Ans. 3 (citing
Zeinstra, Fig. 4, H 28—30). We agree with the Examiner’s finding that
Zeinstra’s wireless phone’s make, model, manufacturer, etc., teaches or at
least suggests the limitation “related to the mobile phone with respect to the
profile” as recited in claim 2. Zeinstra, 128. The Examiner further
concluded it would have been obvious to an artisan of ordinary skill to
associate error information with a phone profile such as that taught in
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Zeinstra because it would allow a determination of which of multiple phones
(makes/models) experienced the error. Ans. 4. The Examiner found that
this type of error tracking was well known to a person of ordinary skill in the
art at the time of the invention. Id.
Appellants have not persuasively rebutted the Examiner’s findings. In
the Reply Brief, Appellants do not address the Examiner’s findings that one
of ordinary skill in the art could have combined the elements as claimed by
known methods, and that one of ordinary skill in the art would have
recognized that the results of the combination were predictable. See Ans. 4;
Reply Br. 2—3. Moreover, Appellants attempt to distinguish claim 2 over the
prior art by the content of the data, which is not a patentable distinction, as
explained above regarding claim 1.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Laguer, Zeinstra, Schwinke, and Otsuka
teaches or suggests the disputed limitations of claim 2.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
representative dependent claim 2, as well as the rejection of dependent
claims 9 and 16, which Appellants group as represented by claim 2. App.
Br. 8. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 3, 10, and 17
Claim 3 depends from claim 2 and recites the further limitation
“wherein the mobile phone configuration data includes device software and
hardware information.” Claims App’x 1. Appellants contend the Examiner
erred because the cited portions of Zeinstra do not teach storage of “device
hardware and software information.” App. Br. 9.
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Appellants’ arguments are not persuasive. The Examiner found that
Zeinstra’s manufacturer/model, performance characteristics of the phone,
headset profile revision, sync ML support, and GSM command set support
teach or at least suggest the disputed limitation. Ans. 5. Appellants have not
persuasively rebutted the Examiner’s findings. Moreover, Appellants
attempt to distinguish claim 3 from the prior art on the basis of the content of
the stored data, which is not a patentable distinction, as explained above
regarding claim 1.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Laguer, Zeinstra, Schwinke, and Otsuka
teaches or suggests the disputed limitation of dependent claim 3.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of dependent
claim 3, as well as the rejection of dependent claims 10 and 17, which
Appellants group as represented by claim 3. App. Br. 8. See 37 C.F.R.
§ 41.37(c)(l)(iv).
DECISION
We affirm the decision of the Examiner rejecting claims 1—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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